AFTER HOURS saved at the last hour

The Swiss Federal Administrative Court has overturned a decision of the Federal Institute of Intellectual Property (IGE) and allowed the registration of the trademark AFTER HOURS for services in Class 35 and 37 of the Nice Classification (Case B-516/2008, January 23 2009).
The Swatch Group Management Services AG (Switzerland) sought to register the trademark AFTER HOURS for services in Classes 35 and 37 (including "retail sale of horological instruments and jewellery, and repair and maintenance of horological instruments and jewellery").
The IGE refused to register the mark on the grounds that it was a synonym of the expression "after the closing of the shops". The sign thus consisted of an expression which lacked distinctive character, since the relevant consumers would understand that the services would be provided after opening hours. Furthermore, the IGE considered that the sign should be kept free for use by competitors. Swatch Group appealed the decision to the Administrative Court.
The court first considered whether the expression 'after hours' was known to the relevant consumers. The court held that it was a typical expression used in connection with clubs and discotheques. However, it doubted that the term was known by people not belonging to the party scene. Furthermore, the court held that it was doubtful whether the party scene would associate the expression with the services at issue.
The court also highlighted that a trademark evoking an association or containing certain allusions that amounted only to vague references to goods or services did not automatically belong to the public domain. Since the expression 'after hours' was not known to the relevant consumers, the court held that the trademark should be registered (according to the court, the party scene constituted only part of the relevant public and should thus be disregarded).
The decision highlights the issue of whether marks consisting of English words are understood by the relevant public. As such, the practice of the Swiss Administrative Court with regard to what belongs to the basic English vocabulary is quite strict (eg, see DELIGHT AROMAS is not descriptive, says court). However, the court appeared to have limited the relevant public and disregarded smaller groups (here, young people who may belong to the party scene). It remains to be seen whether the IGE will adopt the approach of the court in this regard. 
Marco Bundi, Meisser & Partners, Klosters

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